Offc Action Outgoing

Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Search Results

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Identification of Goods and Services

The identification of goods and services is indefinite and must be clarified because as written the nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The identification of goods and/or services contains parenthetical language inserted by the International Bureau because the IB was not able to determine if the classification assigned to particular goods and/or services by an applicant’s Office of origin was correct. See TMEP §1904.02(c). Specifically, the wording in parenthesis will be deleted.

This language is not part of the identification and will be removed. Id. It will not appear on any U.S. registration certificate that may issue. See id.

Applicant may adopt the following identification, if accurate:

In Class 9: Downloadable electronic publications in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of [specify subject matter]; publications in computer readable form, namely, electronic publications in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of [specify subject matter] recorded on computer media; publications in machine readable form, namely, electronic publications in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of [specify subject matter] recorded on computer media;

In Class 16: Printed publications in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of [specify subject matter]; periodic publications, namely, printed periodicals in the field of [specify subject matter]; printed reports in the field of [specify subject matter]; printed matter in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of finance, financial documents; printed financial newsletters;

In Class 35: Business management; business administration assistance; professional business consultancy; business management and organization consultancy; business management consultancy; advisory services for business management;

In Class 36: Financial services¸ namely, [specify by common commercial name in this Class, e.g., banking services, investment banking services]; investment services, namely, financial investment services in the field of [specify field, e.g., real estate, securities]; financial consultancy services; financial management services; fund investments; capital investments; mutual funds investment; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections, namely, charitable fund raising; provision of information relating to real property market and real estate; providing equity and debt financial instrument pricing information; financial investment information services; stock broking information services; provision of financial information relating to shares, accounts; provision of information relating to real estate and real property; computerized financial information relating to commodities, securities; computerised financial services for retail businesses, namely, [specify by common commercial name in this Class e.g., payment transaction processing services]; provision of financial information relating to rates of exchange; real estate appraisal services; real estate brokerage services; real estate consultancy services; real estate evaluation services; real estate financing services; real estate investment services; real estate management services; commercial property investment services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property¸ namely, [specify by common commercial name in this Class e.g., real estate mortgage brokerage]; collection of credit sales, namely, [specify by common commercial name in this Class, e.g., credit recovery and collection services]; collection of payment, namely, [specify by common commercial name in this Class, e.g., agencies for collecting gas utility payments]; administration of shares, namely, [specify by common commercial name in this Class, e.g., Financial administration of stock exchange trading of shares and other financial securities in financial markets]; brokerage of securities shares; computerised information services relating to share prices; financial management of securities portfolios; financial information relating to shares; recording of inter parties transactions in respect of shares, namely, [specify by common commercial name in this Class, e.g., stock brokerage services]; financial exchange for the trading of shares; automated banking services relating to charge card and credit card transactions; computerized financial information services relating to banking matters; financial information services relating to banking, including being such banking information provided online from a computer database or the global communications network; provision of financial news;

In Class 38: Audio and video broadcasting services over the Internet or other communications network, namely, [delete “uploading, posting, showing, displaying and” as it does not identify any services in this Class] electronically transmitting information, audio, and video clips; providing access to databases for information, audio, and video via website, online forums, chat rooms, discussion groups and blogs over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing discussion services on-line, namely, [specify by common commercial name in this Class e.g., on-line forums for transmission of messages among computer users]; provision of information in relation to telecommunication services;

In Class 41: Entertainment, namely, [specify by common commercial name in this Class, e.g., on-going video programs in the field of news accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications, computer and networks]; news reporting in relation to education, training, entertainment or sporting and cultural activities; news reporters services; electronic library services provided by means of a computerized database containing information extracted by newspapers; provision of educational and entertainment information and advisory services relating to current events¸ namely, [specify by common commercial name in this Class, e.g., providing news reporter services entailing news analysis and news commentary about current events]; publication of reviews and critiques; publication of electronic books and journals on-line; providing on-line non-downloadable electronic publications in the nature of [specify form, e.g., magazines, books, pamphlets] in the field of [specify subject matter]; electronic desktop publishing services; online electronic publishing of periodic articles, news feeds, publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; production of news programmes for broadcasting; on-line publication of journals or diaries in the nature of weblogs or blogs in the field of [specify subject matter]; advisory, information and consultancy services relating to all the aforesaid; educational services, namely, providing [specify form, e.g., courses, classes, workshops] in the field of [specify subject matter]; training services in the field of [specify subject matter]; arranging and conducting of educational conferences, congresses, seminars, symposiums and training workshops in the field of [specify subject matter];

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

Description of the Mark Required

Applicant must submit a description of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. In this case, the drawing of the mark is not in standard characters.

The following description is suggested, if accurate: The mark consists of the wording ABC WORLD in lower case inside of three partial circles.

U.S. Counsel Required

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

How to respond. Click to file a response to this nonfinal Office action.

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

/Kevon L. Chisolm/

Examining Attorney, Law Office 103

571-272-9270

kevon.chisolm@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.